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Federal Court finds inventive step where there is no innovative step - another reason to request examination now

Today the Federal Court handed down its judgment in Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165 (6 March 2013) in which Spruson & Ferguson Lawyers successfully represented the patentee, Delnorth, in an appeal against an earlier re-examination decision of the Australian Patent Office.

The case was an appeal against a decision of the Australian Patent Office to revoke claims of Delnorth’s standard patent, on the basis of lack of inventive step. This case is of particular interest as it concerned several claims of identical scope to those which had previously been considered by the Federal Court in relation to three related innovation patents owned by Delnorth. Spruson & Ferguson Lawyers successfully represented Delnorth in the earlier innovation patent cases, both at first instance and on appeal. These landmark judgments first considered the requirement for innovation patents to possess an "innovative step", which is generally understood to be a lower threshold than the equivalent requirement for an "inventive step" for standard patents. Our previous commentaries on the Delnorth innovation patent judgments can be found here and here. Whilst, in the innovation patent judgments our client was successful in establishing certain claims of its innovation patents to be valid and infringed, some of the broader claims were found invalid as lacking an innovative step, in light of each of two related US patents published in the 1960s.

In today's judgment, Nicholas J held that claims of substantially identical scope to those which had been found to lack an innovative step did possess an inventive step. This finding, which on its face may seem somewhat peculiar, results from the present limitation on what prior art may be considered when assessing inventive step under the current provisions of Section 7 (3) of The Patents Act 1990. Whilst innovative step is assessed against any single piece of prior art, inventive step is assessed against the common general knowledge, considered either alone or together with additional prior art. There is currently a limitation, however, that any such additional prior art must have been "reasonably expected to have been ascertained, understood and regarded as relevant" and, in the case of combinations of two or more pieces of prior art, "reasonably expected to have been combined". In considering whether the same 1960s US patents that rendered claims of the innovation patents lacking an innovative step satisfied the "reasonably expected to have been ascertained, understood and regarded as relevant" test, Nicholas J found that there was insufficient evidence to establish that a person skilled in the art in Australia could have been reasonably expected to have conducted patent searches that would have identified the old US patents.

Of particular importance to note now is that the present restriction on prior art that may be considered when assessing inventive step is being removed with the provisions of the Raising the Bar Act, which come into force on 15 April 2013. As previously reported, the provisions of the Raising the Bar Act, which specifically remove the requirement that any prior art used to assess inventive step must have been "reasonably expected to have been ascertained, understood and regarded as relevant", will apply to any Australian patent application where a request for examination has not been filed prior to the 15 April 2013 commencement date.

Our most recent News Alert regarding the Raising the Bar Act and our recommendations in preparation for commencement may be found here.

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